Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On May 25, 2021 the Japan Patent Office (JPO) Nobuaki Kurokawa a trademark for his apparel brand named “CUGGL” for class 25 (clothing and footwear). This year, when the t-shirt design ��for CUGGL was released, the Italian fashion brand Gucci tried to get the trademark cancelled.

Fast forward a few months, on July 26, 2021, Gucci filed an opposition against the “CUGGL” mark with the JPO. Gucci argued that CUGGL t-shirts would confuse customers because of the font and style of the design. Gucci cited of the Japan trademark law in support of their claim.

Gucci that Kurokawa obtained the trademark with malicious intent to take advantage of the luxury Italian brand’s goodwill and reputation as customers would recognize his design to say “GUCCI” even when they can only see the top half of the word. Even though half of the word “CUGGL” is covered with hand drawn paint, anyone familiar with Gucci’s brand might assume at first glance that the shirt says “GUCCI” underneath the paint.

Unfortunately for Gucci, its claim was not successful. As of July 12, 2022, the JPO found that the two brands were distinct and . Even though the decision makers Gucci’s popularity and reputation, they of a resemblance between Gucci and CUGGL based on visual, phonetic, and conceptual considerations. Overall, the low degree of similarly, according to the JPO, is not enough to accept that consumers would be confused between Gucci and CUGGL.

Kurokawa has other successful trademarks and pending applications for brands that potentially confuse consumers (for , “AZIDES” and “PAPAGORIRA”).

Some that the JPO’s decision against Gucci is a win because large companies have manipulated the law to prevent harmless parodies of their brands and the public would not be confused by such parodies. This decision illustrates that the result of a trademark infringement allegation is not so predictable in Japan as it may be in other jurisdictions.

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Photo by Artem Beliaikin ()

Meena Alnajar is an��IPilogue��Writer, IP Innovation Clinic Fellow,��and a 2L JD Candidate at��Osgoode��Hall Law School

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Following its worldwide premiere on November 24, 2021, the biographical film House of Gucci may face for its depiction of the Gucci family. The film is on Maurizio Gucci’s life leading up to his murder by a hitman hired by his ex-wife Patricia Reggiani, played by pop star Lady Gaga. The Gucci family’s heirs spoke out on how the film inaccurately represented the family members as The family stated that they would to protect their name, hinting at forthcoming legal action. Given that the film relies heavily on the Gucci name, there are concerns as to what legal ramifications director and the production company could face.

Who Owns the Name

Since the film discusses both the Gucci family and the Gucci brand, it may be helpful to examine each mark. The Gucci family is attributed to the family members and as such has no technical legal protection. The word ‘Gucci’ however, is also a fashion brand currently owned by the French corporation . Therefore, the family has no legal control or stake in the Gucci name as a brand. Gucci has been trademarking as a fashion brand , garnering over one hundred marks. In addition to registrations for the word Gucci, the brand has several design marks such as its renowned double Gs.

Trademark owners can to the use of their trademark in media and film and file a trademark infringement suit as a result. For the House of Gucci film, the fashion house with the filmmakers to let them use the Gucci wardrobe. There was evidenced consent in the matter, so the film is unlikely to face a trademark infringement suit. Further, most brands reject use of their registered marks because they worry people will get as to who owns the mark. Since the movie’s purpose is to detail Gucci’s ownership of the brand, there is little possibility that audiences would get confused as to who owns the ‘House of Gucci.’ However, the family may still be able to claim defamation for how their likeness appeared on the screen.

What Actions Could the Real Gucci Family Take?

The Gucci family felt in the film, and so they may have grounds for defamation, a civil lawsuit. Though its statutory definition varies between jurisdictions, is generally where one’s reputation has been harmed due to a negative depiction, such as a film that represents them in a negative light. A claimant needs to that the negative depiction is about them, that there were remarks that could cause them serious harm, and that these remarks were circulated to a wider audience. In response, a filmmaker must ground the representations in truth as best as they can. There should be some or fact that would support the claimant’s representation in the film. House of Gucci is based on a non-fiction book by fashion reporter , so the filmmakers could possibly rely on the book as evidence to explain the Gucci family’s depiction in the film.

Narrative films often embellish and exaggerate to captivate audiences, but the filmmakers for House of Gucci may face legal consequences for their creative decisions. The real Gucci family may not have grounds to sue for the Gucci mark, but they could move forward with a defamation suit for the many faces behind the double Gs.

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Alibaba's Tmall Luxury Pavilion is an invite-only e-commerce platform for luxury brands. Though consumers have comfortably shifted to online shopping, many luxury brands have been hesitant to venture into e-commerce, concerned about selling their products alongside brands whose image and quality of goods are not of the same caliber. Though Alibaba's Tmall Luxury Pavilion where “luxury brands can deliver the same kind of exclusivity and custom-tailored shopping experience online as they offer in their brick-and-mortar stores,” Gucci waited three years since Tmall launched in 2017 to finally join the platform.

Kering, the French Luxury group that owns the Gucci brand, has also announced plans to against Alibaba. In the lawsuit, which has been ongoing for five years, Kering sued Alibaba for alleged counterfeiting. In an agreement between Kering and Alibaba in 2017, the two companies agreed to to protect Kering’s brands (which also includes Saint Laurent, Bottega Veneta, Balenciaga, Alexander McQueen), and utilize Alibaba technology to help regulate and remove counterfeited products from the platform. A notes that the companies have “come to a groundbreaking agreement to cooperate in their efforts to protect intellectual property and take joint enforcement actions online and offline against infringers in order to provide the best consumer experience and a trusted environment.”

Alibaba has faced various allegations in the past that its online shopping sites do not proactively prevent the sale of copyright-infringing products, which has been a significant concern for luxury and everyday brands across various e-commerce platforms. In October 2020, priced over $100 in order to address counterfeiting issues. The seller will now be required to send the sneaker to an independent third-party authentication facility for a comprehensive inspection before shipping. After verification, eBay will use expedited shipping to send the sneakers to the buyer. Forbes from Jordan Sweetnam, the SVP and General Manager of eBay in North America: “eBay operates the world's most diverse sneaker marketplace—with the widest selection and best prices—and by removing any uncertainty with the buying process, our community can buy and sell with total confidence.”

The Consumers Council of Canada , highlighting the concerns faced by brand owners and consumers alike with respect to the counterfeiting and pirating of consumer goods and services. Strikingly, the report notes that law enforcement agencies have reported an increasing concern that distributors of counterfeit goods are associated with organized crime and terrorist groups.����������

A notes that "in 2018, Gucci chief executive Marco Bizzari said during BoF’s China Summit that he was reluctant to partner with China’s e-commerce platforms due to concerns regarding counterfeits." Though counterfeit products continue to remain a pressing concern for branded goods, innovation, and consumer health and safety, with the COVID-19 outbreak pushing retailers to move online, it is unsurprising that Kering's Gucci brand has moved in the direction of partnering with Tmall.

Alessia Monastero is an Intellectual Property and Branding Lawyer and IPilogue Senior Editor.

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